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I did not intend it as an attack, merely an observation.
That you feel the need to throw legal references into your posts reinforces that observation.
Considering that Craig got a similar impression, I do not think I was too far off-base.

I will not argue against your position because I do not have a trademark, ip, or law background.
Therefore, I make no assumptions about the legalities involved.

I stated my opinion of how PP dealt with it.
There was a "tone" to PPs responses as well, to draw back to your initial post.
The posting on the PP forum was very hostile.
This informed my opinion, due to the fact I am a miniature gamer and consider myself unaffiliated with either GW or PP.

I understand the urge to defend, but if PP are hurt by the D6G's opinions, Matt will call them.

Great show, overall very informative.

BTW Russ Wyrd errataed the way treasure hunt works if a model "moves" any way other then a walk action it drops the treasure token, so the Viktoria trick doesn't work any more.

When it comes to substantive legal topics, people can have differences of opinion. When that occurs and there are competing property interests at stake, litigation sometimes becomes necessary to resolve these differences. Arguing about such things in the abstract, on a message forum no less, is rather pointless. There are no judges involved, no final resolutions to be had, and no way to judge the true motivations and limitations behind an anonymous posting.

Nevertheless, we feel we would be remiss if we did not respond to statements which imply that Lone Wolf Development (LWD) "does not have much of a legal leg to stand on" or that the law is not favorable to our type of mark. Thus, for the sake of putting our side of this issue on the record, I spoke to our attorney, who has 21 years of trademark litigation experience. The following is a summary of his, and by extension LWD's, position on these matters.

The Army Builder trademark is in fact a Federally Registered mark, and as such has been held by the US Patent and Trademark Office to not constitute a generic or descriptive name. Registration creates a prima facie presumption that a mark is distinctive as opposed to merely descriptive. This presumption becomes incontestable, under Section 15 of the Lanham Act, after 5 years of continuous use in commerce, which is the case with the Army Builder trademark.

Our lawyer also points out that under trademark law, there is a very heavy burden placed on anyone seeking to declare that a trademark has lost its distinctiveness. Indeed, section 14(3) of that Act reads that "a registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service." To put this in simpler language, the burden of proof on a party asserting that a trademark has become generic is considerable, and courts are very loath to strip a trademark owner of its rights. In this regard it is well settled that trademarks are looked at as a whole against any potentially rival mark. They are not, as DD seems to suggest, dissected into their component parts.

Furthermore on this point, a trademark does not become generic simply because it has some significance to the purchasing public as the common name for a product. To become generic, its principal significance, that is its significance to a majority of the purchasing public, must be that the trademark denotes the class of the product rather than the product itself. Some courts have gone even farther, holding that a party alleging genericness must show that to the relevant public the term has lost "all" its trademark significance or that a registered mark should be protected unless there is "conclusive evidence" of its having become generic.

This is certainly not the case here. Any search of the term "army builder" on the internet will find, for example, people inquiring about "army builder data files". In the vast majority of cases that we have reviewed, the responses indicate a clear understanding that what is being sought is data files for LWD's product.

Despite the strength of the Army Builder(R) trademark, if LWD wishes to maintain the Army Builder mark, it must police its use and educate the public on the correct usage of the mark. In this sense, LWD is "legally required" to take action. We certainly do not mean to imply that anyone is legally obligated to assert their rights, however failing to do so does have potential legal ramifications. Thus, to the extent that LWD was also aware of misuses of the term in a generic manner, it also sought to educate the public as to the proper use of its mark. This is consistent with the manner in which Xerox, Google and other companies routinely seek to instruct the public that a trademark is a proper adjective which modifies a noun and should not be used as a verb, etc. To say that LWD is absolved of this duty because we are a small company and not in the same league as Xerox or Google is just bad legal advice. The same laws apply to us as to them.

LWD is fully aware that descriptive terms are available for use by the public to describe their products and services in marketing them, provided that the words are used in their primary or descriptive sense and are not used deceptively or untruthfully. Thus, LWD has no beef with anyone claiming that their product's function is to "build army lists." On the other hand, naming a rival program "Joe's Army Builder" or "Army Builder 2010" would be considered an infringing use and be subject to legal action.

The fact is that LWD sought Privateer Press' permission to use Privateer's forum to instruct the public on these issues, or to be advised whether Privateer would prefer to do that job itself. LWD in no way requested, demanded or agreed with the "drastic" policies that Privateer Press claimed it was being compelled to implement. To the extent that any ambiguity existed on this point, LWD followed up its initial letter with several clarifications. Some were sent privately to PP, while others were posted on PP's forums, the latter of which were immediately deleted by PP, presumably to preserve its narrative of what happened.

We note that PP did not in fact take many of the drastic actions it claimed it was being compelled to take. As a search of the PP forums will show, the term "army builder" is not in fact being filtered and/or replaced with another term. This is just as well, as LWD does not endorse or condone the actions that PP claims it was being required to undertake.

On the other hand, where infringing use of the Army Builder mark is taking place on a public forum, LWD does reserve the right to contact the forum owner and demand that such uses be addressed and corrected. Although internet law is constantly evolving, we believe the law is clear enough that, where a forum owner has been placed on notice of a particular violation of trademark rights, the forum owner is obligated to do something about it or risk liability for contributory infringement.

On a final note, we again wish to point out that none of LWD's claims rest upon the Trademark Dilution Act. Therefore, our position is that DD's arguments against LWD's ability to avail itself of rights created by that act are irrelevant to this discussion.

Hopefully, the foregoing also provides generally informative details that support Episode 49's objective to shed light on trademark issues as they pertain to our industry and hobby. Thanks to everyone for taking the time to listen.

Woooo! Congrats to Craig and Karen for helping produce the next generation of gamers!

Great show as always fellas. Loved hearing Raef really in his element with the trademark discussion, that was Jimmy Jango! The modeling segment was good though I have to admit my wallet doesn't like finding out about Hirst.

And finally, Russ you've finally broken me. I'm in the market for Descent now, I can resist no longer.

Keep it up guys, my favorite podcast by far!

I think I am also going to go down the Descent path. I failed bringing my board and card game friends down the paths of Uncharted Seas and Firestorm Armada. (I even purchased and painted a bunch of starters for both games, sad)

As far as starting a Descent campaign, what is the best order in which to sneak Descent and the expansions into their lives?

lonewolfdevel wrote:When it comes to substantive legal topics, people can have differences of opinion. When that occurs and there are competing property interests at stake, litigation sometimes becomes necessary to resolve these differences. Arguing about such things in the abstract, on a message forum no less, is rather pointless. There are no judges involved, no final resolutions to be had, and no way to judge the true motivations and limitations behind an anonymous posting.

Nevertheless, we feel we would be remiss if we did not respond to statements which imply that Lone Wolf Development (LWD) "does not have much of a legal leg to stand on" or that the law is not favorable to our type of mark. Thus, for the sake of putting our side of this issue on the record, I spoke to our attorney, who has 21 years of trademark litigation experience. The following is a summary of his, and by extension LWD's, position on these matters.

The Army Builder trademark is in fact a Federally Registered mark, and as such has been held by the US Patent and Trademark Office to not constitute a generic or descriptive name. Registration creates a prima facie presumption that a mark is distinctive as opposed to merely descriptive. This presumption becomes incontestable, under Section 15 of the Lanham Act, after 5 years of continuous use in commerce, which is the case with the Army Builder trademark.

Our lawyer also points out that under trademark law, there is a very heavy burden placed on anyone seeking to declare that a trademark has lost its distinctiveness. Indeed, section 14(3) of that Act reads that "a registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service." To put this in simpler language, the burden of proof on a party asserting that a trademark has become generic is considerable, and courts are very loath to strip a trademark owner of its rights. In this regard it is well settled that trademarks are looked at as a whole against any potentially rival mark. They are not, as DD seems to suggest, dissected into their component parts.

Furthermore on this point, a trademark does not become generic simply because it has some significance to the purchasing public as the common name for a product. To become generic, its principal significance, that is its significance to a majority of the purchasing public, must be that the trademark denotes the class of the product rather than the product itself. Some courts have gone even farther, holding that a party alleging genericness must show that to the relevant public the term has lost "all" its trademark significance or that a registered mark should be protected unless there is "conclusive evidence" of its having become generic.

This is certainly not the case here. Any search of the term "army builder" on the internet will find, for example, people inquiring about "army builder data files". In the vast majority of cases that we have reviewed, the responses indicate a clear understanding that what is being sought is data files for LWD's product.

Despite the strength of the Army Builder(R) trademark, if LWD wishes to maintain the Army Builder mark, it must police its use and educate the public on the correct usage of the mark. In this sense, LWD is "legally required" to take action. We certainly do not mean to imply that anyone is legally obligated to assert their rights, however failing to do so does have potential legal ramifications. Thus, to the extent that LWD was also aware of misuses of the term in a generic manner, it also sought to educate the public as to the proper use of its mark. This is consistent with the manner in which Xerox, Google and other companies routinely seek to instruct the public that a trademark is a proper adjective which modifies a noun and should not be used as a verb, etc. To say that LWD is absolved of this duty because we are a small company and not in the same league as Xerox or Google is just bad legal advice. The same laws apply to us as to them.

LWD is fully aware that descriptive terms are available for use by the public to describe their products and services in marketing them, provided that the words are used in their primary or descriptive sense and are not used deceptively or untruthfully. Thus, LWD has no beef with anyone claiming that their product's function is to "build army lists." On the other hand, naming a rival program "Joe's Army Builder" or "Army Builder 2010" would be considered an infringing use and be subject to legal action.

The fact is that LWD sought Privateer Press' permission to use Privateer's forum to instruct the public on these issues, or to be advised whether Privateer would prefer to do that job itself. LWD in no way requested, demanded or agreed with the "drastic" policies that Privateer Press claimed it was being compelled to implement. To the extent that any ambiguity existed on this point, LWD followed up its initial letter with several clarifications. Some were sent privately to PP, while others were posted on PP's forums, the latter of which were immediately deleted by PP, presumably to preserve its narrative of what happened.

We note that PP did not in fact take many of the drastic actions it claimed it was being compelled to take. As a search of the PP forums will show, the term "army builder" is not in fact being filtered and/or replaced with another term. This is just as well, as LWD does not endorse or condone the actions that PP claims it was being required to undertake.

On the other hand, where infringing use of the Army Builder mark is taking place on a public forum, LWD does reserve the right to contact the forum owner and demand that such uses be addressed and corrected. Although internet law is constantly evolving, we believe the law is clear enough that, where a forum owner has been placed on notice of a particular violation of trademark rights, the forum owner is obligated to do something about it or risk liability for contributory infringement.

On a final note, we again wish to point out that none of LWD's claims rest upon the Trademark Dilution Act. Therefore, our position is that DD's arguments against LWD's ability to avail itself of rights created by that act are irrelevant to this discussion.

Hopefully, the foregoing also provides generally informative details that support Episode 49's objective to shed light on trademark issues as they pertain to our industry and hobby. Thanks to everyone for taking the time to listen.

The Federal Trademark Dilution Act directly amended the Lanham Act (Title 15 of the US Code that outlines the federal statutes for trademark law) in 1995. The Federal Trademark Dilution Revision Act of 2006, in turn, directly amended the 1995 act. This law is a federal statute that is directly applicable to the situation at hand because it is codified in the Lanham Act (aka Trademark Act). I hope your lawyer didn't charge you too much.

"Recognizing that famous marks, ordinarily, are used on a nationwide basis and that judicial decisions interpreting and applying state dilution laws were inconsistent, this Subcommittee, under the leadership of then Chairman Carlos Morehead, crafted federal legislation to protect famous marks against dilution. This legislation, the ''Federal Trademark Dilution Act of 1995'' was passed by Congress and codified in Section 43(c) of the Lanham Act."

Source: http://commdocs.house.gov/committees/judiciary/hju77698.000/hju77698_0.htm

You mentioned the term "genericization," which is a term of art that refers to a certain type of trademark dilution (i.e. dilution by genericization). Due to the fact that it is a form of dilution, it falls under the Federal Trademark Dilution act. Rather than rehash the same claims I've made before, I will direct you to this article posted in the Santa Clara Computer & High Technology Law Journal outlining a few of the arguments I made. It also outlines some trademark nuances and jurisdictional conflicts that makes this issue far less clear cut as you, and your attorney, espouse. My arguments, of course, are based on the presumption that your mark is arguably famous (one could reasonably infer this would be the case based on the numerous comparisons between "Army Builder" and "Xerox, Coca-Cola, etc.").

http://www.chtlj.org/sites/default/files/media/articles/v024/v024.i3.Diamond.pdf
http://www.thefreelibrary.com/New+Dilution+Act+Broadens+Trademark+Protection+But+Excludes+Niche...-a0153769056 (add'l reading)

Another point I need to clarify is that I did not say that because a federally registered trademark is comprised of two generic terms common to a market that it automatically renders the trademark generic. That's for the trier of fact to decide. I stated that it casts doubt on the legal enforceability of your trademark if you were to seek an injunction or litigation. This law is very nuanced and can easily be misconstrued.

Edit: If the components of the mark are common descriptive terms, i.e. generic, a combination of such terms is also generic. Multistate Legal Studies at 36 (finding that “Multistate Bar Examination” was generic). For more information on my "compound generic terms" argument, please see National Conference of Bar Examiners v. Multistate Legal Studies, Inc., 692 F.2d 478. Also note that this applies to trademark infringement in general, and not just dilution.


Granted, you could argue trademark confusion, which is completely distinct from dilution, but it is not as clear cut as you lead others to believe as well. Also, you've yet to make a convincing claim on the issue of confusion, only genericization. If contested in court you could still find yourself with an uphill legal battle. I won't go into this area of the law because it is another entire can of worms entirely (and I know everyone is tired of hearing about it). Regardless, my point is that this was not a "legal necessity" for you to send PP a C&D. I stand by my opinion.

On the other hand, where infringing use of the Army Builder mark is taking place on a public forum, LWD does reserve the right to contact the forum owner and demand that such uses be addressed and corrected. Although internet law is constantly evolving, we believe the law is clear enough that, where a forum owner has been placed on notice of a particular violation of trademark rights, the forum owner is obligated to do something about it or risk liability for contributory infringement.

In response to this, I will simply restate the post that I made on the LWD forums.

The onus is not on Privateer Press to retrospectively and prospectively monitor their forums for alleged improper use of the mark "Army Builder," nor are they legally responsible for "educating" their forum users that they may be infringing. The fact of the matter is that the programs (Forward Kommander and a number of others) are not sponsored nor endorsed by Privateer Press, nor is PP pecuniarly invested in these projects. The fans of PP who made these programs, on their own volition, decided to share their program on the forum. Mandating that Privateer Press take direct responsibility for the actions of their forum users, lest they face future injunctions and legal action, is absurd. I highly doubt that any federal jurisdiction in the U.S. would establish the precedent that forum hosts are legally responsible for the alleged trademark infringements that occur on their forums. Do you realize how onerous this is?

Automatically Appended Next Post:
With that last comment I'm officially done. I've expressed my opinion and clarified it to the best of my ability in the hopes of expressing a different perspective. Anything more is counterproductive.

As you can tell I'm a big fan of Privateer Press *edit -- on second thought, I feel I acted reasonably*. I apologize if Craig, Russ, and Raef were offended by my comments. I know I came off a hot-headed, but I really meant no disrespect. Good luck with the podcast (not that you guys need it anyway).

-DD

p.s. The blatant outcry in the community and your abrasive "too little too late" apology is what makes me chuckle. For a little perspective on what the gaming community actually thinks outside of this vacuum, see http://forum.rpg.net/showthread.php?t=497369 . Let's hope you'll never have to see any of those "pointless" arguments in litigation (arguments which I have taken the liberty to substantiate with legal statutes and case precedent). You'd likely not be happy with the results.

DD wrote:

As you can tell I'm a big fan of Privateer Press and I took a bit more offense over this whole situation than I probably should have.
-DD

Really now, we would never have known. (yes that was sarcasm) Rabid fan-boyism is bad mmkay? I'd suggest some deep breathing exercises or yoga, find your inner Zen gamer and leave the foaming at the mouth behind.

With regards to the further legal interpretations being proffered by DD, I will simply say that our IP attorney actually chuckled this morning [clarification: at the fact that you insist on arguing this further here in this forum where nothing will be decided]. Since arguing here is pointless, it appears we'll just have to agree to disagree.

That leaves the continued claim that we demanded "Privateer Press to retrospectively and prospectively monitor their forums". As I noted in my previous post, what LWD sought was removal or revision of infringing references (which were unfortunately initially referred to as "improper references", later clarified) on the PP forums. We further sought to post an educational message concerning general usage, and left it open as to whether this should come from LWD or PP (we felt it would be overstepping to do so without asking permission).

I believe anyone who reads all of the letters LWD sent to PP, including the public clarification and the apology that LWD immediately issued, will see that this is the case. We acknowledge that it is possible to quote select portions of our original letter out of context in order to resurrect the misconception that LWD demand filtering and mass deletions, but this is simply not the truth of the matter. Without speculating on what motivations people may have for doing this, we trust that those who want the truth will take the time to read what we have repeatedly publicly said on this matter and take us at our word that all we seek is the protection of our legitimate trademark rights, just as any other business would.

Thanks to everyone for listening and thanks to the dakkadakka gang for providing a venue for this discussion. I truly hope that we can now put this topic to bed and that I can get back to working on some cool new product features.

lonewolfdevel wrote:With regards to the further legal interpretations being proffered by DD, I will simply say that our IP attorney actually chuckled this morning. Since arguing here is pointless, it appears we'll just have to agree to disagree.

I have been a practicing attorney since 2002. I have litigated "bet the company" IP cases for large corporations, small businesses, and individuals. I admire DD's dedication to his studies, but I agree with your IP attorney.

lonewolfdevel wrote:Thanks to everyone for listening and thanks to the dakkadakka gang for providing a venue for this discussion. I truly hope that we can now put this topic to bed and that I can get back to working on some cool new product features.

I was particularly intrigued by the idea that Colen mentioned on the show about linking the entries in the Army Builder force creation tool to an e-commerce site where I could click and buy new models for my armies. I think this has great potential, and am a little surprised no miniature retailer would want this instant business referral system. I'd be tempted to start a web-based store just to capitalize on this concept.

To the D6G crew: Great job (particularly to HD) for taking an arcane and widely-misunderstood subject and making it approachable. Was it necessary? Probably not, but I am always frustrated by the nonsense I read on many gaming forums about IP law, cease and desist letters, and certain companies' positions. I also did not find it terribly biased toward LoneWolf, though not having a PP representative to explain their side of the story may have tipped the balance a bit toward LoneWolf. I understand this is a hobby, and I also know you guys have nothing but love for Privateer Press (Russ and Raef perhaps more than Craig, but the point stands), so I didn't mind it.

lonewolfdevel wrote: LWD in no way requested, demanded or agreed with the "drastic" policies that Privateer Press claimed it was being compelled to implement.

"This needs to be remedied"
"we require your assistance"
"we cannot allow"
"that needs to be addressed"
"must be educated"
"This is necessary to avoid"
"you would also prefer that the forums continue to run smoothly and without interruption" lol, is this a threat???
"name "Army Builder" are rectified and you confirm to us within 72 hours that you have done so" no discussion, just an ultimatum
"We are thus required to do this"

you are correct in that you didn't request anything but are 100% wrong about the demanded part (see a few choice quotes from your letter to them). you might just be better off in letting this bout of nerdrage die down instead of reigniting the flames. i thought your apology was adequate (not good, just good enough) but you're digging yourself deeper with your further comments in some gamers' eyes. calling privateer disingenous because they didn't post your just-barely-an-apology? if someone who partly depends on you for their livelihood kicks you in the nuts, you have a right to tell your friends about what they did. just because they half heartedly apologize later doesn't mean the original act didn't occur and you now have to tell everyone they sorta apologized. i've seen threads on a half dozen different forums about your letters and ALL of them have a strong propoderance of "WTF was LWD thinking?" general themes despite your registering/posting on them.

I ave to say this was very interesting, and I really appreciated the long segment on what would normally be a very boring topic - the copyright law section was great. Plus it allowed my man HD to really show his Jedi powers. Well done.

On the side of the events, it's sad that things have gotten out of hand. I think we should all extend the benefit of the doubt to all parties involved in this. I don't think ANY of the participants acted with malice, and it's easy for things to get blown out of proportion on the internet. I really think that we should assume that all parties had the best intentions, and move on.

Ok, just had to drop my 2 cents in.

On to other things: I really enjoyed the segment on painting. I am thinking about doing quick paint jobs for all the ships in my Battlestar board games. Has anyone done this? Worth the trouble? I think some simple washes over a grey base coat, and some red vizers on the Raiders and maybe some simple striping on the Vipers would look cool. Anyone else think it's worth the trouble?

Also, I think having previews of models and an e-commerce function in Army Builder would be the bomb. (By the way, well-done on the changes in AB version 3. Lots nicer than previous incarnations.)

As someone who's sick to the teeth of the whole Lone Wolf debacle, I'll be skipping this episode in its entirety. If I'd wanted to keep listening to dry semantic arguments about what's acceptable and what's not, I'd've enrolled in law school.

Keep up the good work, and let's hope we'll have no more of this.

Hey, just want to pitch in here that I really enjoyed the part on Trademark.

As an attorney it was nice to hear how another attorney would present Trademark issues to the general public. I think Raef did an excellent job in that manner.

Gotta say thanks again D6G for yet another wonderful episoded. From my point of view; the longer the show, the better. 4 to 5 hours of D6G means 4 to 5 hours of painting I can get done!

And again I must say: "Blast you D6G!"

I picked up Descent....and Sea of Blood....and started a campaign....and LOVED it! My pocketbook cries out, but my fun meter thanks all four of you!

My son (11 yr old) and I started playing Descent this weekend. Two games Saturday, one today and we're having a blast! I'll have to go back and listed to the episode with the Descent review again to get that recommended order to get the x-pacs in.

Thanks for the Jedi mind trick Russ!